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of latents is authorized to rrescind any order upon notification by the heads of all departments and the chief officers of all agencies who caused the order to be issues i litt the publication or disclosure of the invention is no longer dromed to bedrerinventail to the national security.
NE<. ?: The invention disclosed in an application for patent subject to an oriler maur pursuant to section I hercof shall be held abundoned upon its being established before or by the Commissioner of Patents that in violation of said orilor said invention has been published or disclosed or that an application for a patent therefor has been files in a forcign country by the inventor, his successors, assigns, or legal representatives, or anyone in privity with him or them, without the consent or :pproval of the Commissioner of Patents, and such abundonment sh:1ll be hell to have occurred as of the time of such violation: Providcl, That in no ease shall the constit or approval of the Commissioner of Patents be given without the concurrence of the leauls of all clepartments and the chief oslicers of all agencies who caused the order to be issucci: Provided further, That any such holeiing or brandonment shall constitute forfciturc by the applicant, bis successors, assigns, or legal representatives, or anyone in privity with him or thein, of ulí claims : glinst the United States used upon such invoution.
*. ;. Ang supplicant, his succissors, assigns, or legal representatives, whose patent is withiold as doctein providel, shall, if the order of ilic Commissioner of l'a:outs above referred to shall have been faithfully obeyeri, have the right, during a period beginning at the late the applicant is notified that, except for such order, his application is otherwise in condition for allowance, or beginning at the coffective rate of this Act, whichever is later, and curling two years after the date a patent is issued on such application, to apply for compensation based upon the list, if any, of the invention Ly the Government, such right to compensalion to begin from the date of the firsi use of the invention by ihe Governinent. The head of any apartment or agency who caused the order to be issued is authorizei, if any such claim is prosented within the periools above specified, to cnter inio an agreement with said applicant, his successors, assigns, or legal re poresrutatjur, in full settlement and compromise for such usc, if any, and any such soittlement agreement entercul into shall be final and conclusive for all purposes, notwithstanding any other provision of law to the contrary. If full compromise and settlement of any such claim cannot be effector, the head of any clariment or agency who caused the order to be issued, mily, in his liscretion, adlininistratively aware and pay to such applicant, his successors, assigns, or Irgal representatives, a sum not scrivling 75 per centum of the maximum sum, if any, whicli in the opinion of the head of such department or ngency would constituin fair and just compensation for such nise, if any. Within two years after issuance of the patent, any claimant who fails to secure an award satisfactory to hion shall have the right to bring suit against the United Statrs in the Court of (lims for such amount which, when ankled to such award, il any, shall constituir fair and just compensation for the rise, if any, of the invention by the Government. The owner of any patent issued upon an application that was subject to a secrecy order issued pursuant to section 1 hercof, and who faithfully obrved the order, who did not apply for compensation as above provided, shall have the right, within two years after the cate of issuance of such patent, to bring suit in the Court of Claims for fair and just compensation for the use by the Government of the patented invention, such right to compensation to begin at the firsi date of such use: Proricherl, That in any suit under the provisions of this section, and in any negotiations looking towaru settlement and compromise of any such claim: the United States may avail itself of any and all lefenses that may loc pleciei loy it in all action miler page: 28, United States Coole, section itis (revised, ils amenderi: l'roridei further, That no compensation under the Art shall lor polil for 1950 by the Civvernment of an invcution inace while the invertor thesrof wis employed by the (overnment.
"Sur. 1, lo person shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility modlil, inclustrial design, or model in respect of :uny invention made in the I'niial States prior to.niu.e!! days after filing in the United States an application covering such invention erpt when authorized in each case by a license obtained from the Commissioner of Patents under such rules and reinations as he shall prescribe: I'rniji!cit. That no such licruise shall be granted with respect to any invention which is tlor subject matter of il subsixtilig ordor ixster by the Commissioner of Parteuils porsiant to rection i hercof without the concurrence of the heads of all departments or the chief oflicers of all agencies who cansed the order to be issued.
"Sec. 5. Notwithstandling the provisions of sections 4886 and 4887 of the Revisal Statutre (335 U.S.C., sccs. 31 and 32), any person and the successors, assigns, or legal representatives of any such person, shall be debarrce from receive ing a United States patent for an invention is such person, or such successors, assigns, or legal representatives shall, without procuring the authorization prescribed in section 4 hercor, have maric, or consented to or assisted another's making, application in a foreign country for a patent or for the registration of a utility inodcl, industrial design; or morlel in respect of such invention where authorization for such application is required by the provisions of section of hcrcof, and any such United States patent actually issued to any such person, his suc. cessors, assigns, or legal representatives so debarred or becoming debarred shall be invalil..
"Sec. 6. Whocver, during the period or periods of time an invention has been ordered to be kept secrct and the grant of a patent thercou withheld pursuant to section 1 hercof, shall
, with kuowledge of such orrier and without duc authorization, willfully publish or disclose or authorize or cause to be published or disclosed such invention, or any material information with respect thereto, or whocver, in violntion of the provisions of section 4 hercof, shall file or cause or authorize to be filed in any foreign country an application for patent or for the registration of a utility model, industrial design, or model in respect of any invention made in the United States, shall, upon conviction, befined not more than $10,000 or imprisoned for hot more than two ycars, or both.
"SEC. 7. As usce in this Act
"The term 'person' includes any individual, trustce, corporation, partnership, association, firm, or any other combination of individuals.
"The term 'application includes applications, and any modifications, amend. monts, or supplements thereto, or continuances thercof.
"Thic terın ‘usc' includes manufacture, salc, or other disposition of the invention by the Government, or for the Government with its authorization or consent.
"Sxc. 8. The prohibitions and penalties of this Act shall not apply to any oslicer or agent of the United States acting within the scope of his authority.
“Sec. 9. The Atomic Energy Commission, the Secretary of the Army, the Secretary of the Navy, the Secretary of the Air Force, the chief officer of any other departinent or agency of the Government designatcil by the President as a defense agency of the United Stntos, and the Commissioner of Patents, may separately issuc such rules and regulations as may be necessary and proper to enable the respective department or agency to carry out the provisions of this Act, and in addition arc authorized, under such rules and regulations as cach may prescribe, to delegate and provide for the redclegation within their respective departments or agencies of any power or authority conferred by this Act to such responsible officers, boarels, agents, or persons as each inay designate or appoint,
"SEC. 10. If any provision of this Act or of any section hcrcof or the application of such provision to any person or circumstance shall be held invalid, the remainder of the Act and of such section and application of such provision to persons or cir. cumstances other than thosc as to which it is held invalid shall not be affected thcrcby.
"Sec. 11. Any order of secrecy herctoforc issuel, and subsisting on the dute of the npproval of this Act, shall be considered as an oriler issucel pursuant to this Act and shall continuc in forec and effect for a period of one year froin the effective date of this Act, unless sooner rescindled as provided herein: Prorided, That any claim arising under the Act of which this Act is amendatory and unsettled as of the effective date of this Act, the provisions of any other Act or Acts to the contrary notwithstanding, may be presented and determincd pursuant to the provisions of section 3 hcrcos.
"Sec. 12. Nothing in this Act shall alter, amenil, revokr, ropril, or otherwise affect the provisions of the Atomic Energy Act of 1916 (60 Stat. 755)."
Mr. Bryson. The committee will please come to order. We have for consideration this morning II.R. 6359, a bill to amend the act relating to preventing the publication of inventions in the national interest, and for other purposes. I believe Captain Robillard is the first and only witness.
Mr. BERNILARDT. Mr. Chairman, before Captain Robillard procccds, may I say that the American Patent Law Association has submitted a statement on this bill in which they approve of it with
amendments.or', itt least, they state that they will not oppose it if it is attended in the ways that they indicate.
Jr. Brysos. 11cons that they have voluminous amendments.
Jr. BERNIL RDT. 'Yes, sir; I have additional copies of this statement.
Mr. Brysos. Without objection that statement will be included in the record.
(The matter referred 10 is as follows:)
SUITEMENT ON BEHALF OP TIE AMERICAN PATENT LAW AssociaTION ON
II.R, 6359 (l'repared by the Committee on Laws :und Rules, Paul A. Rosc, chairman)
The board of managers of the Americ:in latent Law Association has authorized this statement to express the views of the issociation with respect to the bill, !I. R. 638!!, to mend the act relating to preventing the publication of inventions in the national interest and for other purposes.
This bill is generally similar to the existing legislation, but if cnnctral would be effective at all times, whereas the present law is oilective only cluring the time when the lintel States is at war. The bill is more specific ils to the procedures to be followers in retermining which applications for patcuts will be placorl in secrecy by the Commissioner of Patents : makrs it incumbent on the Commissioner of Patents to issile secrecy orders when notified by the Atomic Energy Commission or the head of : defense agency that the disclosure of the invention by the grant of a patent would he cherrimental to the national interest. Under the prosent 1:1w the matter is entirely discretion:ry with the Commissioner, although as a matter of practice he follows the recommenlations of the Atomic Energy Commission and of the defense ancies,
The advisory power provided for the heitels of the defense agencies is desirable since they are in a better position that is the Commissioner of Patents to make the determination as to whicli inventions should be maintained in secrecy. Tlowever, the disclosure of penaling appliciitions to persons other thin employees of the Patent Office is contrary to the gener:il rule of maintaining applications for patents in srcer, and it is believed closirable that record be made of the identity of all persons outside the Patent Onlice who :re permitted to examine an application in that this he a part of the official record. Accordingly, it is suggested that the bill be amenderi on page 2, line 1.1, by inserting the following language after the word "states": "; ind cach inclividual to whom the poneling application is di-closel, shall csecute a vated acknowledgment thereof, which acknowledgment shall be made an ollicial paper of the applic:tion filc."
Also on page: 3, line 2, before the colon, after the word "requires", insert the following: anil lipon proper showing by the head of any klepartinent or agency, who cansel such security order to be issuch, that the examination of the applicata tion might jeopardize the national interest, then the Commissioner of Patents shall immediately scal such application:",
The purpose of ilois : menilaient is to make it possible for contractors working on highly classified projects to file :pplic:utions in order to get a cate of filing in those cases in which the subjmet matter is so highlı seret un important that the court rulering ollicrors of the professe gencies would not permit the filing of an application for patent is the site tere to be procesul und examined in the usual Hater in the Patrnt Office: By providing for t! scaling of the files in these
paria (:1914. the powractor's patent rights are sufetturled by permitting him tis obtain: filing .cle. for the appliioil.jou covering the invention.
The loill provides for :mmal rivist of *****repay orelers in time or prace, but luring time of war ili orelers will lor effective for the duration of the war. 'Breattist of the noluir lo:14 "iluration" of World War II : flip the position of hostilities, it is elgesic that the wervis " luration of the war in line 17 or pago 3 le changed 19 feel iluratin o hostilities and il fwrioul of one year followving the commabion of lwiili jes'. This will give emple time for revirwine issuance of requests for mail:letter of severary orilors in proper crises after the end of actual hostilities in aut war.
The lui!l:is does ili present 1:1w", provides suvere pornuallics, including a hoking of botiloten ollw application if the surroyoriler is violatoxl. The bill makes
such holeling mandatory, regardless of the circumstances or motive. It is urget that the penalty should be permissive in order that the Commissioner may use his cliscretion in those cases in which viol:ution is unintentional or mitigating cireumstances are present. Accordingly, it is recommenced that in line 1 of pago 1 the woril "shall" be changed to the word "may".
The present law provides for compensation of an applicant whose application has been placed in sccrccy in those cases in which the invention is used by the Government, the compensation to begin from the date of usc hy the Government, and also provides that the head of a department or agency inay enter into an agreement in compromise of any claim for compensation for such use and also for any damage accruing to an applicant by virtue of a sccrecy order.
The bill provides only for coinpensation in those cases in which an invention placed in secrecy is actually lined by the Government and omits the provision for compensation for damage by virtue of the secrecy order. In time of peace particularly, there should be some provision for compensating an inventor who is preventivi from patenting and exploiting his invention which well may have valuable civilian uses and applications. If such an invention has military value or is of such a nature that the defense agencies desire that it be kept secret, although the (overnment may not make any use of it, then the applicant should bx compensated. Admittedly, the measure of damages will be difficult to establish, but the right to compensation should be providel. In order to make such proi ision it is suggested that the bill be amende as follows: On page 5, line 3, cancel the words "based upon" and insert the worils "for the damage accruing to hirn by reason of the order of secrecy and/or for"; on page 5, lines 11 and 21 before the word "usc” inscrt the worls "dl:image andor": on page 6, lines 2 and 10 before the word "use" insert the words "damige and/or".
These amendments will provide the same remedies for making claim for compensation for clamage as for making claim for compensation for usc.
The following :uditional amendments are suggestel:
Pago 3, it the end of line 11 ani in line 12 before "gency," change "the" to "any."
Page 7, line 25, asier the word "invalidl" insert "undss otherwise authorized by the Act of Congroiss of August 8, 19:16 (60) Stat. 9-13, h. 910, sec. 6;35 W.S.C. 105."
Page 8, line 20, after "thereto," insert "livisions"; line 21, at the curl of the sentence after "hercor," insert' "or substitutes therefor"; line 23, lelete the comm; line 24, pare a period after the world "Governments and delete the reminiler of the sentence.
These amendments are for the sake of completeness and clarity.
On page !), line 2, delete the period at the end of the sentence and auld thereto "nor to any person acting upon the writion instructions of, or in reliance on the written permission or advice of, iny such officer or agent."
This aimeniment is for the protection of a contractor who cliscloses an invention upon the order or authority of the contracting ollicer or other officer of the United States having authority to order such a disclosurc.
On page !), line 16, after the word "appoint" delete the period, and substitute a colon and iusert the following: "Provilcil, homerer, That no rules or regulations issued by any such department or agency shall forhid the filing of an application by a Government contractor, escrpt in those instances where the United States huis full right, title, and interest, in and to the invention."
This amendment is made in keeping with the amendment on page 3, line 2, in order that no contractor will be prevented from filing an application on an invention growing out of it classifica contract unless the invention is wholly owned by the Government.
Provided the bill is amouer :is proposer herrin, the American Patent Law Association interposes no objection to its approval.
Mr. BERNILARDT. Al tlie same time I have received a statement from the Chicago Patent Law Associntion in opposition to the bill, and I have also received a statement from the Aircraft Industries Associntion of America, Inc., which does not oppose the bill if it is imended in the ways that they have suggestel.
Mr. Biisos. Their amendments are similar to the others!
Mr. BERNHARDT. I have just gotten their amendments, so I cannot state, VIr. Chairman.
Hr. Brysos. Without clojestion those statements will be included in the record at this point.
(The matter referred to is as follows:) The PITEST 11w AxwOLATION or Chicco, LEGISLATIVE COMMITTEE, REPORT
" SOHCOMMITTEE ox Tysois Bu.., $. 2.5:17, 180 Tue (USPANION CELLER 31.1., 11.1. 6:389), RELATING TO SECHECY Or L'UTENT APPLICATIONS
$ 2.557 was introduceel in the Sist Congress, 1st sexsion, bx Senator Tyrlings on September 13, 191-19), and the inclentic:ll companion bill, II.R. 6:389, was introcuced in the llouse of Representatives by Mr. (Aller on ()ctober 13, 19-19). These bills proposito amend the existing statuirs 35 U.S.C.nctions 12 10 121, inclusive. These existing stattutes are offective during the time when the United States is at war, while the proposeel legislation will be effective in peacetime, as well as wartime.
Similar legislation was introduced in the Soth Congress kuown as S. 1726 and 11.1: 42:20. subcommittee consisting of Paul J. Glaister, chunirman, Benjamin 11. Sherman and John A. Dicuiner, Jr., mouche il report to the legislativo committee in the spring of 19:18, recommending that these previous bills bc disapprovrel.
DIGEST of s. 25:57 AND 11.1. GISO These bills relate to preventing the publicntion of inventions in the national interest and are intended to replace 35'U.S.C. sections 12 to 128. The proposcd lills are briully summarizi below by sections.
Serlinn 1.-!en the Ciovarmineni hits a property interest in an invention and the heart of the interesteel cupiirtment thinks that its publication would be detriinental 10 national security he may notify the Commissioner of Patente to withholil the erant of a patent.
When the (inverinent alors not have an interest in the invention but the subject matter is within cort:in calories prescribed by the President and the Commissioner is of the opinion that publication would be detrimental to national security he may make the application available for examination to the Atomic Encre Cornmission, the Secretaries of the Army, Nirvy, and Air Force and the calls of such other governmental clepartments or agencies as mily be designated by thir l'resiilent is defense 15 neies, an if any one of them notitirs thc Cominissiller th:10 the invention should be kept secret lie shall withholil the grant of patent. The owner my appeal from the secrecy order uwer rules to be prescribed by the President.
Sverici orelors will remain in effect for only 1 year but may be renewer for ::!ition:! 1-1*:!r periouls upon notification love the ckpart.unt beau requesting the initial scenery orelor except in the event of war, in which cilsc thc sccrccy orilors star in effect without notice of renewal.
The present law clors not provide for an appeal from a secrecy oriler and the term of a scorcry oreler is prescrived by the Commissioner rather than being limited to I year.
Serlion 2.- In case of failure to comply with the secrecy orilor the application is itonel. The Commissioner must approvr itny foreign filing with concurrece of the Secretaries or deportment leuls who caused the secrecy or ler to issue.
Sortion 3.-- When the application being proscenter er il cervey order is in condition for allowance the owner may apply for compensation for its use by the Governinset dating from the first use by the Government. lpon application buy the owner the head of the agency cousing it secrecy order to issue may enter into : settlement with the owner. If the pirties cannot agrec, the department heal hy settle on the basis of 75 percent of his offer and the owner may suc for the remainder in tlir ('ourt of Claims at the time his patent issues and for 2 years thereafter. If the owneos dor's not apply for compensation ho may suc in the Court of Claims when his potent issties and for 2 youts thereafter.
Inedir t.le prixent. 1: 1hr invintor inusitander huis in vention to the Governhwnt in their the right to stir in the Court of ("liums when his patont issuics.
Siction ... -Tliepa mas lw no forrign liling irrespective of the subject matter of the invention initilarter 990 clars from the Il.S. liling life without the approval of tlır. ('omissioner.
In the presett I: (srp. 12:1) ul forrigli filings must. 11:1 ve the Commissioner's ::I'pror:1, 1l this apipirosol is utomatic:illy given in the form of a license issued Dal printed on the basick of the filing rerripi.
sition 5.-An application made contrary to section 4 shall be dcbarred from !"mming a posit.